New Guidance for the Specifications of United Kingdom Trade Mark Applications

The United Kingdom Intellectual Property Office (UK IPO) has issued a Practice Amendment Notice (PAN No. 03/13) clarifying the type of specifications which will be permitted in United Kingdom national trade mark applications and the UK designations of International Registrations. The PAN lists class heading wording from the Nice Classification which has been agreed by OHIM and the national Trade Mark Offices of the European Union to be sufficiently clear and precise to meet their requirements.

If applicants include objectionable class heading wording in their UK application, an objection will be raised on examination, to which applicants will be able to respond by specifying in more detail the goods/services for which they seek to protect their trade mark.

PAN No. 03/13 has been issued in response to a reference to the Court of Justice of the European Union (CJEU) in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, which was handed down on 19 June 2012. In this decision, on which we have commented in previous circulars, the CJEU held that trade mark applicants should specify the goods or services for which trade mark protection is sought with sufficient clarity and precision to enable the trade mark authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. This judgment did not preclude the use of Nice class headings, provided that they were sufficiently clear and precise to enable third parties to determine the scope of protection of the mark. 

The UK IPO has listed 11 elements of the Nice class headings which are not considered sufficiently clear and precise to be acceptable for protection. The UK IPO has also issued guidance as to the types of wording which are likely to attract an objection on examination. The class heading wording which will not be permitted is listed below: 

Class 6 “Goods of common metal not included in other classes”

Class 7 “Machines and machine tools”, although “machine tools” alone is acceptable

Class 14 “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes” although “precious metals”, “Precious metal alloys” and “Precious metals and their alloys” are acceptable

Class 16 “Paper, cardboard and good made from these materials, not included in other classes” although “Paper” and “cardboard” are acceptable

Class 17 “Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes” although “rubber”, “gutta-percha”, “gum”, asbestos” and “mica” are acceptable

Class 18 “Leather and imitations of leather, and goods made from these materials and not included in other classes” although “leather”, “imitations of leather” and “leather and imitations of leather” are acceptable

Class 20 “Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics”

Class 37 “Repair”, “Installation services” Class 40 “Treatment of materials”

Class 45 “Personal and social services rendered by others to meet the needs of individuals”

If applicants claim any of the class heading wording listed above which has been held to be unacceptable, an objection will be raised on examination, to which applicants will be able to respond by providing more specific descriptions of the goods/services claimed. Where trade mark applications are filed for class heading wording which is held to be acceptable, or other more specific wording, applicants will be required to attest in their application form that this wording should be given its ordinary and natural meaning. Applicants are not permitted to include wording such as “All goods in Class X”.

Comment

We advise clients to include only the specific goods/services of interest in their UK trade mark applications.  The Nice class heading terms can be adopted except for the prohibited wording listed above. Clients should bear in mind that the UK, unlike OHIM, requires applicants to attest in their application form either that the mark is in use in respect of the goods/services for which the application has been filed, or that the applicant has a bona fide intention to use the mark in respect of all these goods/services. This requirement may preclude applicants from including the full alphabetical list of the Nice Classification in their applications. 

For more information on the contents of this circular or if you need to seek specific legal advice please contact James Fish (jfish@jakemp.com), Rosalind Miller (rmiller@jakemp.com) or your usual J A Kemp advisor, all of whom can be contacted on +44 (0)20 3077 8600. 

15 October 2013

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